The movie Selma, which chronicles Dr. Martin Luther King Jr.’s 1965 voting rights campaign, has received critical acclaim and an Oscar nomination for best picture. It has also generated controversy due to the Academy’s failure to nominate its lead actor and director for awards, which in the eyes of some is indicative of racial bias in Hollywood. Interestingly, another potential controversy hidden within the film has apparently been avoided through the careful consideration of the film’s director and screen writer. Their actions will certainly receive the thanks of the film’s insurers, but historical accuracy has been sacrificed to avoid copyright claims.

Dr. King’s speeches are protected by copyrights held by his estate. In 2009, the estate licensed the speeches and the rights to his life story to Stephen Spielberg’s DreamWorks production company for use in a picture to be produced by Mr. Spielberg. Due, in part to this licensing agreement, and in part to a reluctance to seek permission from the King family for right to use the speeches, Selma’s director sought to find a way around the problem. The solution was simply to rewrite Dr. King’s speeches in an attempt to avoid copyright infringement. By way of example, in the film Dr. King speaks at a funeral and asks “who murdered Jimmie Lee Jackson?” His actual question was “who killed him?” Separately, Dr. King’s impassioned plea to “give us the ballot” was changed to “give us the vote.” I am pretty sure that such minor alterations would not have saved me from a charge of plagiarism in my high school English class, but it is presently viewed as a sufficient change to avoid the ire of the King family.

Assuming that the film production maintained some form of liability insurance, which is almost guaranteed, it may afford the film protection from claims of copyright infringement. While film production liability policies are somewhat unique, standard commercial general liability polices provide coverage for copyright infringement claims under “Coverage Part B,” which provides coverage for certain alleged “Personal and Advertising Injuries.” Under such policies, coverage is provided for negligent infringement of a copyright, but excluded for knowing/intentional violations. The workaround used in Selma presents a coverage dilemma. The screenwriter was aware of the copyright and the potential that that the film would infringe on the protection yet he attempted to avoid a violation and may have subjectively believed that his alterations were enough to avoid a claim. Is his objective belief enough to avoid the application of the policy exclusion, or would coverage be voided if the words used violate the copyright?

Hopefully, the film will avoid generating any claims associated with Dr. King’s copyrights and no one will be forced to wrestle with this coverage question or related defenses of fair use. It is a shame that Dr. King’s actual words were not used in the movie. In an age when our knowledge of history is reduced to what we see on film, Dr. King’s oratory has been purposefully altered, thereby shaping our memory and potentially diminishing the power of his words. I hope that Mr. Spielberg has better success in historical accuracy in his project. “I possess a desire” just doesn’t have the same impact.

This blog was originally posted on January 30 on Freeman Mathis & Gary, LLP, Law Blogline. Click here to read the original entry.

The Baltimore Ravens and the National Football League are asking the Fourth Circuit Court of Appeals to reverse the December 2012 decision of a Maryland federal judge in a long-running copyright dispute with Franklin Bouchat. The decision at issue entered an injunction that prevents the Ravens and the NFL from selling or showing clips in which the old “Flying B” logo is visible. The injunction does allow the two entities to use the logo, but, if they do, they must first pay Bouchat royalties. The judge set the royalties at a one-time fee of $721.65 for all future sales of highlight reels and $100 for each clip shown at future Ravens home games.

The Flying B logo, used by the Ravens from the1996 season through 1998, was allegedly a ripped off of a design that Bouchat created in 1995. This dispute has generated nine separate lawsuits against multiple parties including the Ravens, the NFL, and NFL licensed merchants. The current case was back before the district court on remand from the Fourth Circuit. Originally, the district court held in favor of the Ravens and NFL, stating the use of the logo was protected by the “fair use” doctrine. The Fourth Circuit disagreed and reversed and remanded the case to determine if an injunction could be granted.

In their recent brief submitted to the Fourth Circuit, the Ravens and NFL argue that the lower court judge went too far. They assert that the “reasonable compensation” awarded to Bouchat was an unprecedented move by the court because Bouchat sought only an injunction, not royalties. The Ravens and the League argue that the injunction, triggered by the nonpayment of royalties that weren’t requested, is something that has never been done in copyright law before.

Since the designer did not request royalties, the parties are also challenging the court’s calculation of compensation. The two stated that “it is well-settled that before a court can calculate a hypothetical royalty rate…” the copyright holder (Bouchat) must first demonstrate the design’s fair market value. Bouchat did not do this because it was not required to receive the requested injunction. The Ravens allege that the judge came to the compensation figure by relying on “hypothetical negotiations between the parties.”

This blog was originally posted on Sports and Entertainment Law Insider on June 6. Click here to see the original post.

An important federal appeals court has determined that a Connecticut court has jurisdiction over a Canadian citizen whose only act in Connecticut was accessing information on a computer server located in Connecticut. In MacDermid, Inc. v. Deiter, 702 F.3d 72 (Dec. 26. 2012), a Connecticut-based company, MacDermid, Inc., sued its former employee, Deiter, a Canadian citizen who worked from Canada, in federal court in Connecticut for misappropriation of MacDermid’s trade secrets. MacDermid alleged that Deiter sent confidential company information from her company email account to her personal email account. The lower court dismissed the case, saying that Connecticut courts did not have jurisdiction over Deiter because she never set foot in Connecticut and only used a computer terminal in Canada. MacDermid appealed. The U.S. Court of Appeals for the Second Circuit, in New York, reversed, holding that it was proper for a Connecticut court to exercise personal jurisdiction over a Canadian employee of a Connecticut company because, even though she was located in Canada and physically interacted only with a computer in Canada, she “used” a server in Connecticut.

Background

MacDermid is a chemical company located in Connecticut. Dieter, a resident of Ontario, Canada, worked for MacDermid’s Canadian subsidiary. The email system for both MacDermid and its Canadian subsidiary is located on a server in Waterbury, Connecticut. Just before Dieter was about to be fired, she forwarded what MacDermid claims is confidential information from her MacDermid email account to her personal email account. In doing so, Dieter accessed MacDermid’s email server in Connecticut, even though she did so while located in Canada and physically interacting only with her computer terminal in Canada (albeit a company computer). MacDermid sued Dieter in Connecticut for trade secrets misappropriation, and Dieter moved to dismiss, arguing that Connecticut courts did not have jurisdiction over her, as she had never left Canada. The issue was whether the Connecticut “long arm” statute gave Connecticut courts jurisdiction over someone outside of Connecticut, and whether such jurisdiction would be constitutional. One section of the “long arm” statute gives Connecticut courts jurisdiction over someone who “uses a computer” or “a computer network” located in Connecticut. Therefore, the issue became whether accessing email via a server located in Connecticut constituted “using” a Connecticut computer or network.

Analysis

The lower court dismissed the case because it found that Dieter had not “used” a Connecticut computer or Connecticut computer network, but had only sent email from one computer in Canada to another computer in Canada. The Second Circuit court disagreed. It concluded that “using” a computer or network may involve more than just the act of physically interacting with a computer. While Dieter had physically interacted only with her terminal in Canada, she had “used” MacDermid’s network in Connecticut by accessing it electronically when she sent an email from her company account to her personal account. The Second Circuit pointed out that the “long arm” statute does not require that user be located in Connecticut, but only that the computer or network – i.e., the thing that is “used” – be located there. In other words, the “long arm” statute extends to people who access Connecticut computers or networks remotely.

But, having determined that Connecticut’s “long arm” statute extended to Dieter, the Second Circuit still had to determine whether exercising jurisdiction over Dieter would be constitutional. It found that it was. The court found that Dieter knew that, in using MacDermid’s email system, she was accessing a server in Connecticut. Even though Dieter would have to travel from Ontario to Connecticut to defend herself in the lawsuit, that would not be an unreasonable burden on her. Furthermore, according to the court, Connecticut has a significant interest in interpreting its misappropriation laws. The Second Circuit concluded that it was proper for Dieter to be sued in Connecticut for the wrong she was alleged to have committed.

Implications

While this decision was based on Connecticut law, the Second Circuit federal appeals court covers New York, Connecticut, and Vermont. Moreover, it is considered an important authority on commercial law. So its analysis on personal jurisdiction could be persuasive in other courts.

Lesson

The lesson here is that if you think you are safe from suit in a particular state in the U.S. just because you access a computer from the comfort of a faraway state – or even, as in this case, another country – you might be gravely mistaken.

On February 20, 2013, department stores J.C. Penney Inc. and Macy’s Inc. faced off in a new arena – a New YorkState courtroom. The two retailers are going to trial over Martha Stewart. Macy’s suit accuses J.C. Penney of attempting to convince Martha Stewart to break her company’s exclusive merchandise contract with the department store chain – a contract Macy’s says gives them the exclusive rights to sell certain Martha Stewart products until 2018. Part of Macy’s lawsuit reads: “J.C. Penney want[s] to rob Macy’s of market share and destroy the competitive advantage that it enjoys as a result of its existing exclusive agreement with (Martha Stewart Living).”

J.C. Penney argues that Macy’s rights to the Martha Stewart merchandise are not nearly as broad as Macy’s claims. According to J.C. Penney: “Macy’s should stop competing in the courtroom and start competing in the marketplace.”

The move to market the Martha Stewart line is one of several initiatives by J.C. Penney to revive its struggling business. As part of its new plan, J.C. Penney acquired a 16.6% stake in Martha Stewart’s company in December of 2011, subsequently announcing its plan to open up Martha Stewart ‘mini shops’ in most of its stores. In response, Macy’s immediately sued J.C. Penney and was granted a preliminary injunction prevent the sale of the Martha Stewart goods at J.C. Penney while the trial played out.

A central issue of the case is whether or not the court agrees that the mini-shops fall under the exclusivity clause of the Macy’s/Stewart agreement.

Last year Roy Fox got to thinking – what if NFL Head Coaches and brothers Jim Harbaugh (San Francisco 49ers) and John Harbaugh (Baltimore Ravens) ended up facing each other in the Super Bowl? With that thought in mind, Fox went out and spent over $1,000 to file trademark applications for the terms “Harbowl” and “Harbaugh Bowl.” The NFL was not pleased by Fox’s play. Shortly before the 2012-2013 season began, the League contacted Fox with concerns that his trademarks could become confused with the NFL’s “Super Bowl” trademark. The NFL then “encouraged” Fox to abandon his quest to have the marks approved.

Though Fox attempted to bargain with the League in return for this abandonment – requesting either his costs in pursuing the applications or other NFL goodies such as season tickets and autographed photos – he was stonewalled. Eventually, after the NFL stated that it would to seek to recover its future legal costs incurred in opposing Fox’s filing, Fox withdrew the applications on October 24, 2012.

R. Polk Wagner, an intellectual property professor from the University of Pennsylvania Law School, isn’t so sure that Fox was required to abandon his quest, stating “[m]y view is that the league was being overly aggressive in their interpretation that his marks were confusingly similar to ‘Super Bowl.” Still, Wagner opined that such a result was relatively common, noting that when individuals are faced with the prospect of a legal battle with a large, well-funded organization such as the NFL, “nine out of 10 times, the person backs away.”

As originally published at SportsLawInsider on January 25, 2013 Republished with permission

Everyone’s seen the movie Avatar. How many people have read the book Bats and Butterflies? How many people have even heard of it? The author of Bats and Butterflies alleges that James Cameron’s Avatar is a rip-off.

Background

Elijah Schkeiban, author of the book Bats and Butterflies, filed a lawsuit against Cameron, author, director, and co-producer of Avatar, and Lightstorm Entertainment, Inc., Twentieth Century Fox Film Corporation, and Dune Entertainment LP. Schkeiban alleges in his lawsuit that he created the Bats and Butterflies “franchise of products” in 1988 based on his script and novel of the same name. He alleges that he registered the copyrights for the script and novel in 2000 and 2001.

Schkeiban alleges that in 2005 he started shopping the script to various people in Hollywood, including an actor named Billy Zane. He alleges that Cameron’s Avatar copied Bats and Butterflies, and that the two stories are “substantially similar” in plot, sequence of events, characters, themes, moods, setting, and pace. He alleges that Cameron and the other defendants therefore infringe his copyrights. You can’t watch the movie Bats and Butterflies, to decide for yourself whether Schkeiban’s claims have merit, because the movie hasn’t been made. But you could read the novel.

Anyway, the court dismissed his Complaint, noting (correctly) that the Complaint was missing an essential element of a copyright infringement claim: it made no allegation whatsoever that Schkeiban gave or showed his script to Cameron or the other defendants, or that they had access to it. This was a fatal omission.

Schkeiban then filed an “Amended” Complaint, in which he now alleged that when he gave his script to Zane in 2005, he asked Zane to give a copy of it to Cameron, and that Zane later told him that he had done so. Again, the court dismissed the Amended Complaint. The court noted that Schkeiban’s new allegation only alleged that Zane allegedly told Schkeiban that he (Zane) had given the script to Cameron. This allegation simply wasn’t enough, the court said, to establish that Cameron actually saw the script.

Schkeiban responded by filing a Second “Amended” Complaint. In this third pleading, Schkeiban pointed out that Zane is an actor who had been in Cameron’s previous film, Titanic, and therefore was close to Cameron. Schkeiban further alleged that he had had a telephone call with Zane in 2005 in which Zane assured him that he had given the Bats and Butterflies script to Cameron. Otherwise, there were no changes from the previous Complaints.

Copyright Law Protects the Expression of Ideas

Before turning to the court’s final decision, a little about copyright law. Many people who don’t work in intellectual property don’t realize that copyright law cannot and does not protect ideas. It protects only the actual expression of those ideas.

In literary works, such as novels or scripts, you can’t copyright what are called “scenes a faire,” meaning standard plots, scenes, characters, or themes.

You can’t copyright plots, such as “boy-meets-girl, boy-breaks-up-with-girl, boy-reunites-with-girl, and boy-and-girl-live-happily-ever-after.”

You can’t copyright scenes, such as “boy-meets-girl-in-a-dimly-lit-bar.”

You can’t copyright characters, such as heroes, villains, victims, etc.

And you can’t copyright themes, such as “misunderstood and conflicted soldier in invading culture falls in love with a member of the invaded culture, switches allegiance, and leads the invaded culture in repelling his own culture. This persistent theme in human literature is nicely explored in the Wikipedia entry for the film Avatar. (Consider: the novel Tarzan and the film Dances With Wolves.)

In order for a court to find copyright infringement in a script or novel, there has to be almost exact copying of the actual mode of expression – i.e., the words and sentences. Therefore, Schkeiban would have to show not only that Cameron saw or had access to his script, but also that Cameron literally or almost literally copied from it.

The Court’s Decision – Avatar Not “Substantially Similar” to Bats and Butterflies

The court again dismissed Schkeiban’s Second Amended Complaint, pointing out that this was Schkeiban’s third attempt to make out a copyright infringement claim. The court noted that to prove copyright infringement, a claimant must prove:

1.ownership of a valid copyright, and

2.copying by the alleged infringer (Cameron) of elements of the infringed work (Bats and Butterflies) that are original to that work.

In turn, copying can be proven by showing that:

1.the defendant had access to the infringed work, and

2.that the works at issue are “substantially similar.”

The court noted that, even on his third attempt, Schkeiban’s effort to show that Cameron had access to Bats and Butterflies was vague. But, even assuming Cameron had access, the court found that the elements of Bats and Butterflies and Avatar are not “substantially similar.” Bats and Butterflies is a fantasy work that involves a bullied human teenager, Joshua, who is magically transported to a planet and finds a war between bats and butterflies. Joshua helps the butterflies defeat the bats and helps a caterpillar princess mature into a queen butterfly. As we all probably know, Avatar involves a disabled war veteran/mercenary soldier who flies to a planet; through cloning technology is transformed into one of the native beings on that planet in order to spy on them; and eventually sides with the natives and helps them defeat the invading humans – his own people.

Although both works involve humans who go to a distant planet and become involved in a war between two cultures there, the similarities end there, according to the court. Schkeiban argued that his script and Cameron’s film were similar because both involved ideas of alien lands, deaths of family members, and battles between groups with competing interests. The court found that the plots and sequences of events between the two stores are substantially different and that any similarities are merely general ideas, which cannot be copyrighted. Similarities between Schkeiban’s hero, a bullied teenager, and Cameron’s hero, a paraplegic war veteran, are not copyrightable. Any random similarities of plot scattered between the two stories are “scenes a faire.” Both stories arguably involve themes of racism, genocide, imperialism, and environmentalism, but, again, themes cannot be copyrighted. As a result, the court found that, after three attempts, Schkeiban could not prove copyright infringement, and dismissed his claim with finality (“with prejudice”).

Another note about copyright law: In contrast to the standard “American Rule,” whereby each party in litigation pays its own attorneys’ fees, the copyright statute allows the prevailing party (here, Cameron, et al.) to recover its fees. After persuading the lower court to dismiss Schkeiban’s Complaint, the defendants moved for recovery of their attorneys’ fees. The court denied their motion.

The court docket reveals that Mr. Schkeiban has filed an appeal to the U.S. Court of Appeals for the Ninth Circuit. Bats in the Belfry?

Stay tuned.

*This article was originally posted to "The IP Stone" by Walter Judge on December 19, 2012. Read the original post here.

Although by no means a “hell hole” jurisdiction, it is difficult for a peripheral asbestos defendant to obtain summary judgment in Bridgeport Superior Court in Connecticut. Once summary judgment is denied, many asbestos defendants with questionable liability will often settle out rather than risk the financial exposure of an adverse result in a mesothelioma jury trial. It is helpful for a company to have a well thought out appellate strategy in mind before selecting a jury in that jurisdiction. One recent asbestos trial did not turn out well for a trade association defendant..

On August 24, 2012, the Bridgeport Superior Court denied post-trial motions filed by Tile Council of North America (“Tile Council”) inHannibal Saldibar v. A.O. Smith Corp. The Tile Council is a trade association that developed and patented an asbestos-containing formula for dry set mortar. This jury verdict raises the issue whether a trademark licensor may be held liable under a theory of strict liability as the “apparent manufacturer” despite having never manufactured or sold the product at issue. The Apparent Manufacturer Doctrine seeks to hold the licensor vicariously liable for defective products manufactured by the licensee.

The Bridgeport Superior Court’s decision is arguably a departure from the precedent established inBurkert v. Petrol Plus of Naugatuck, Inc., 216 Conn. 65 (1990), a well reasoned decision by the Supreme Court of Connecticut. The principal issue in Burkert was whether the distributor of an allegedly defective product, an automatic transmission fluid, was entitled to indemnification against GM, the licensor of a trademark under which the allegedly defective product was marketed. GM, the trademark licensor, did not participate in the production, marketing or distribution of the product.

In Burkert, the Connecticut Supreme Court made two significant rulings: (1) because GM did no more than allow others to use its Dexron® II trademark in the production, marketing and distribution of transmission fluid, absent any further involvement in the stream of commerce, GM could not be deemed a seller under Connecticut’s Product Liability Act; and (2) plaintiff could not rely upon Section 400 of the Restatement of Torts (Second) because that section applied only to those involved in the sale, lease, gift or loan of a product.

The Burkert court cited with approval the holdings of courts in other jurisdictions explicitly holding that liability against a trademark licensor under the Apparent Manufacturer Doctrine is appropriate only when the licensor is determined to have been significantly involved in the manufacturing, marketing or distribution of the defective product. Regardless of whether the plaintiff is proceeding on an “apparent manufacturer” or an “enterprise” theory of liability, the majority of cases emphasize the licensor’s degree of control and involvement exercised over design, manufacturer and sale.

The plaintiff in Saldibar may have raised sufficient factual issues to avoid summary judgment but arguably should not have prevailed on post-trial motions. In rejecting Tile Council’s argument that it was not a “product manufacturer” or “product seller” pursuant to the Connecticut Product Liability Act, the court found that the Tile Council was sufficiently involved in the distribution, marketing and manufacture of its products to “fall within the ambit of the product liability statute.” To add insult to injury, the trial court not only refused to set aside a $1,500,000 verdict in compensatory damages, plus $100,000 in loss of consortium damages, but also upheld an award of $800,000 in punitive damages based on the jury’s finding that Tile Council acted with “reckless disregard” for the safety of product users. Based upon this holding, a trademark licensor in Connecticut is potentially liable for punitive damages resulting from injuries caused by a product it neither manufactured nor sold.

Although the involvement of Tile Council may have been more extensive than that evidenced by GM, the trademark licensor in Burkert, it is questionable whether these factual distinctions warranted a finding of liability, let alone an award of punitive damages. In Saldibar, for example, the court relied upon testimony by a co-defendant, H.B. Fuller, that Tile Council had “developed a market for these products, based upon their formulas, based upon their trademark and hallmark, if you will, of an assurance that if you buy products that contain this logo, you can be sure that it did work.” There us absolutely no probative value to this testimony. On the other hand, If the Plaintiff or Plaintiff's employer had provided testimony that he relied on the presence of the licensor’s logo for assurance that the product was safe, it may have raised a reliance issue. But The co-defendant’s testimony, cited by the trial court, is not relevant to the issue of reliance because it did not purchase the product. Of more importance is that it does not appear Plaintiff was induced to purchase the asbestos-containing product because of the licensor's involvement.

Arguably, the licensor should only be potentially liable (as a threshold matter) when it induces the consumer to purchase the product or where plaintiffs can prove that they reasonably relied on the trademark.

What was apparently fatal to Tile Council was the trial court's determination that Tile Council set forth detailed specifications governing “all aspects” of the product, including the percentage and grade of the asbestos fiber to be used. Moreover, in Saldibar, Tile Council drafted the product warnings that appeared on the product. On the basis of these facts, the trial court distinguished Saldibar from Burkert.

Saldibar raises some troubling concerns from a policy standpoint. Saldibar rewards conduct by a licensor that distances it from the ultimate consumer. If Tile Council was in the best position to recommend warnings for the product label, why should this activity alone become a basis for imposing vicarioius liability? The issue in Saldibar was not whether the warnings were adequate to warn against the risks of asbestos use, but whether the warnings were sufficient to bring Tile Council under the ambit of the Connecticut Product Liability Act as a “apparent manufacturer.” There is no indication that Plaintiff ever read the warnings or that an alleged failure to warn was a proximate cause of plaintiff’s injury. As a practical matter, a plaintiff should be required to demonstrate that he saw the licensor’s logo and was induced to purchase the product on that basis. Whether there was detrimental reliance by the product purchaser was not an issue considered by the court.

DC Comics has filed a trademark infringement suit against a Florida barbershop owner in federal court. The suit accuses the owners of “Supermen Fades to Fros LLC” of using signs, promotion materials and logos which bear DC Comics’ trademarked “Superman” materials.

DC Comics requested that the shop owner cease the use of the marks on multiple occasions without result. DC’s complaint notes that “DC has never at any time authorized defendants to utilize the infringing promotions in conjunction with any barbershop business and/or the sale or offer for sale of hair groom services. Defendants’ use of the infringing promotions is likely to cause confusion, to cause mistake and to deceive as to the affiliation, connection or association of defendants’ infringing barbershops with DC.”

The complaint also alleges that “Supermen Fades to Fros” shops use barber capes bearing the Superman logo and utilizes Superman imagery for advertisement purposes on the company’s website. Aside from trademark infringement in violation of the Lanham Act, the suit also puts forth claims under the Federal Anicybersquatting Consumer Protection Action, and claims for dilution and unfair competition under Florida state and common law.

On Friday, August 24, a nine member jury entered a verdict in favor of Apple and awarded almost $1.05 billion in damages. Apple filed suit against one of its largest competitors, Samsung Electronics, in April 2011, and alleged that Samsung’s Galaxy line of smartphones and tablets infringed seven of Apple’s patents covering the iPhone and iPod products. In turn, Samsung countersued alleging that Apple infringed Samsung’s patents covering various wireless software components of its products. After more than a year of highly contentious litigation and following a trial that began at the end of July and lasted the better part of August, the jury deliberated for less than three days before delivering the verdict in favor of Apple.

Prior to trial, Apple received a significant e-discovery victory when the court sanctioned Samsung for its failure to preserve emails after Samsung should have anticipated the lawsuit by Apple. The court determined that Samsung had a duty to preserve evidence as of August 23, 2010, and while Samsung issued a litigation hold and provided instructions detailing how to save emails using its email system, Samsung failed to disable the auto-delete function of its email system, which automatically deleted all emails every two weeks in Samsung’s Korean offices. The court ordered that, as part of the sanctions, the jury would be allowed to draw an adverse inference against Samsung and that the jury would be told to presume that relevant evidence was destroyed and that the lost evidence was favorable to Apple.

The court also entered pretrial preliminary injunctions against Samsung barring the sale of the Galaxy Nexus phone and the Galaxy Tab 10.1 in the United States. Moreover, the court delivered various ruling for and against both parties on various in limine motions. One ruling against Samsung appeared to be very significant: Samsung took issue with the court’s ruling that, because Samsung failed to disclose in time contentions that Samsung’s designs were in development before the iPhone, Samsung was precluded from using slides containing images of the Samsung designs.

In opening statements and during trial, Apple set forth its theory that Samsung had ripped off the unique design features of the iPad and iPhone and infringed certain utility patents. Apple focused on comparisons between Samsung’s phones from 2006 to its newer smartphones from 2010. Also, Apple relied on internal documents from Samsung comparing Samsung’s products with the iPhone hardware. On the other hand, Samsung maintained the position that Apple had no right to claim a monopoly on certain design features that were not revolutionary. Samsung’s theory to demonstrate non-infringement was to get the jury to focus on the specific legal requirements relating to each of Apple’s patents. Samsung also went on the offensive by attempting to prove that Apple’s products use certain Samsung features for mobile devices, such as the process for emailing photos and the technology relating to easily finding photos in an album. Moreover, Samsung attempted to demonstrate that Apple’s patents were invalid due to developments in technology that existed before Apple claimed to have invented such technology. The parties relied on various liability and damages experts to support their respective positions.

During closing arguments, counsel for Apple argued that Samsung copied Apple’s designs after realizing that Samsung could no longer compete with Apple. Samsung, in turn, argued that a verdict in favor of Apple would severely suppress competition and reduce consumer choices. In the end, with more than 100 pages of legal instructions, the jury was able to complete a 20 page-long verdict form and return a verdict in less than three days.

Apple recently asked a judge hearing a patent infringement case to sanction attorneys for Samsung after those attorneys issued a press release with a link to documents that had been ruled inadmissible. The actual quote from the press release was apparently, “"fundamental fairness requires that the jury decide the case based on all the evidence.” Essentially, Samsung’s attorneys decided to try the case in the media, as well as in the courtroom. Apple took the position that the press release was an attempt to influence the jury. The attorneys for Samsung argued it was simply a press release. The Judge has indicated additional investigation may take place after the trial, but that he would not allow “theatrics” or “sideshows” (his words, not mine) to interfere with the trial.

Trial publicity is an issue that crosses various legal disciplines. It affects criminal and civil cases alike. In Alabama, a lawyer is not permitted to make “an extrajudicial statement that a reasonable person would expect to be disseminated . . . if . . . it will have a substantial likelihood of materially prejudicing an adjudicative proceeding.” Ala. R. Prof. Cond. 3.6. Unfortunately, the vast majority of that rule deals with publicity around a criminal case, not a civil case.

Most clients carefully control the amount and type of publicity regarding a case, recognizing that the publicity can be a two-edge sword. In many cases, clients do not want any public statements regarding the case. In my opinion (and my personal opinion only), it is therefore unlikely that Samsung did not approve the press release. The question is what purpose did it serve? If it was a backdoor attempt to get the jurors to view the inadmissible documents, the press release and link was clearly improper, and (I would argue) potentially demonstrated contempt for the rules of evidence, and Samsung’s counsel should have refused. If it was an attempt to put public pressure on the judge to reconsider his ruling on the admissibility of the documents, it failed miserably, and has potentially adversely affected the judge’s opinion of counsel. Save such an attempt for the appeal. Now, at trial, if it is a close call, the judge is unlikely to give Samsung’s attorneys the benefit of any doubt. If it was for neither purpose, it seems like a somewhat pointless exercise (akin to a temper tantrum), which has now brought the attorneys’ credibility and professionalism into question in the middle of a high-profile trial.

All attorneys should ask themselves whether the risk of damaging their credibility in front of a trial judge in such a matter is really in the best interest of their clients. Additionally, all firms should ensure that they have a clear policy in place, including designating one attorney to respond to press requests for a statement or release regarding a case. That person should be required to carefully analyze the pros and cons of making any statement to the press before doing so.